Application

• Applicant’s name, nationality and address.
• Applicant’s nature of business (industrial, commercial or other).
• Image of the Mark in pdf or jpg format (in color if claimed as a distinctive feature of the Mark, together with the relevant description).
• Class and specification of products or services (international classification, Nice Agreement -Ninth Edition).
• Priority Claim (if claimed) – country, date and number of the earlier application (the original or certified true copy of the priority document should be submitted within three months from the date of application). The list of products and/or services in the application must be coincident with the ones designated in the priority claim document.
• Notarized Power of attorney.

 

Procedures

• Within one month of the application being filed, the IP Office will commence a formal examination to verify that the application form is completed correctly, that all required documents are filed with the application form, and that the goods and/or services are correctly classified.
• If the goods and/or services are classified incorrectly, the applicant must take the necessary measures in order to rectify irregularities.
• If the application is short of any of the required documents, the applicant must proceed with the late submission of the relevant documents within a period of one month after being notified by the IP office. Otherwise, the application for registration will be refused and such decision will be published in the Official Gazette.
• After submission of the required documents for filing the Mark application, the Macau IP Office will publish the Mark application (approximately within two to four months from the filing date) in the Macau Official Gazette.
• There is a period of another two months counted from the publication date during which any interested third party may file an opposition against the Mark application.
• Should an opposition against the Mark registration application be filed by any interested party, the applicant will avail of one month, counted from the IP Office’s notification letter date, to submit its reply.
• At the end of this period the IP Office will examine the application (the substantive examination which verifies the Mark’s distinctive character, the non-existence of any confusing similarity with previously registered signs, that it is not comprised of any prohibited signs and the Mark’s veracity) and make the decision as to whether or not the registration is successful.
• Should the Mark be granted, the IP Office’s decision will be published in Macau Official Gazette and if within a month from the publication date no appeal is lodged by any interested third party against the granting of the Mark registration then the Mark is finally registered.
• The respective registration certificate is usually issued within one or two months after the above referred publication.

 

Appeals

• Any interested party dissatisfied with the final decision of the IP Office may lodge an appeal to the Court of the First Instance. The appeal must be lodged within one month after the IP Office’s decision has been published in the Official Gazette. This period is non-extendible.

 

Assignments, Licenses, Liens, Mergers and Changes of Identity or Address

• For the recordal of assignments, licenses, and liens, an original or certified true copy of the relevant document (in which the signatures of the involved parties should be duly notarized) is required.
• For the recordal of mergers or change of name, the original or the certified true copy of the document issued by the company’s registrar is required.
• Apart from the above mentioned in regards to assignments, mergers and change of name, a notarized power of attorney executed by the current owner is also required.
• For the change of address, a notarized power of attorney (POA) showing the updated address will suffice.

Validity, Renewals, and Revival

• The registration is valid for seven years from the registration date, renewable indefinitely for equal periods of time.
• The renewal application must be submitted during the six month period preceding the renewal date.
• Renewal of a Mark registration is still possible during the grace period (the six month period following the renewal date) subject to the payment of an additional official tax.
• The registration becomes vulnerable to a non-use cancellation action by any interested third parties if it is not used during three consecutive years unless there is a valid reason for such non-use.
• A mark registration may be revived during the course of an additional grace period of 6 months. The revival will only be granted by the Macau IP office if it does not infringe on the rights of a third party.

 

Transitional Provisions

• Macau Industrial Property Code – Decree-law 97/99/M in operation since 7 June 2000.
  • Marks are valid for seven years from the date of registration.
• Macau Mark Law – Decree-law 56/95/M in operation from 6 December 1995 until 6 June 2000.
  • Marks, granted between 6 December 1995 and 7 June 2000 are valid for seven years from the date of application.
• Portuguese Industrial Property Code valid until 5 December 1995. Marks are valid for 10 years from the date of approval.
  • Marks granted before 6 December 1995 are valid for 10 years from the date of approval.
  • Applications before the 6^th of December 1995 and granted after that date, if published in the Portuguese Industrial Property Bulletin, are valid for 10 years from the date of approval. If they are published in the Macau Official Gazette they are valid for seven years from the date of application. (Provided they are not published in the Portuguese Industrial Property Bulletin).

 

Additional Information

• The law recognizes as a Mark a sign or group of signs, which are capable of being represented graphically. These include words, including personal names, designs, letters, numerals, sounds, the shape of the product or its packaging, providing that such signs are capable of distinguishing the products or services of one company from those of other companies.
• Legal protection will not be granted to:
  • Signs or indications consisting exclusively of the shape of the product itself or of the constituents from which the final product is made.
  • Signs or indications which are commonly used to designate the geographical origin, kind, quality, quantity, shape of the goods and services or that have become usual and frequently used in commercial language.
  • Colors also cannot be registered per si unless combined in ways or used in graphics or words which create a sense of distinctiveness in the Mark of the goods or services.
• Registration will also be refused if the Mark contains signs or words falling under one of the following prohibitive items:
  • Signs or words confusingly similar (reproduction, imitation or translation) to a Mark which is well-known in Macau that, when applied to identical or similar products or services of the same classification, can mislead the consumer to establish a connection with the well-known Mark.
  • Signs or words confusingly similar (reproduction, imitation or translation) to a previously registered prestigious Mark which, although intended for products or services that are not identical or similar, may benefit unfairly from the reputation of the previously registered Mark.
• Series of Marks and multi-class applications are not permitted.
• The Madrid Agreement and Protocol are not in force.

 

 If the above information does not fully address questions you may have please do not hesitate to contact us.